Chapter §14.06 Indirect Infringement Under §271(b) - (c): Overview

• Jurisdiction: United States

§14.06 Indirect Infringement Under §271(b)–(c): Overview

[A] Practicing Less Than Complete Claimed Invention

Indirect infringement concerns activity involving less than a making of the entire invention, such as assisting one who directly infringes, or supplying certain required components of the invention to the direct infringer. Although the indirect infringer does not practice the entirety of the claimed invention, such activity nevertheless is considered infringing because it assists or supports another entity's direct infringement. The direct infringer and the indirect infringer are both considered jointly and severally liable for the infringement under a theory of joint tortfeasance.³⁷²

As codified in the Patent Act, indirect infringement occurs in two forms: inducing infringement, which is governed by 35 U.S.C. §271(b), and contributory infringement, which is governed by 35 U.S.C. §271(c). Each type of indirect infringement is separately analyzed in detail later in this treatise.³⁷³ This subsection is merely intended to provide an introduction and overview.

[B] Intent Required

A key distinction between indirect and direct infringement is that indirect infringement liability requires proof of intent or scienter. In contrast, "a direct infringer's knowledge or intent is irrelevant."³⁷⁴

A number of cases have considered the precise nature of the intent required for indirect infringement liability. Consider party A, an alleged indirect infringer, and party B, an alleged direct infringer, of party C's patent. Is it sufficient that A merely intended to induce or contribute to the act(s) that B performed, without knowledge by A that such act(s) amounted to infringement of C's patent? Or instead, must A have intended to induce or contribute to act(s) by B that A knew would infringe C's patent? If the latter inquiry states the correct standard, it logically requires that A knew about C's patent.

As examined in further detail infra,³⁷⁵ the Supreme Court tackled this issue in its 2011 decision in Global-Tech Appliances, Inc. v. SEB S.A.³⁷⁶ To summarize, the Global-Tech Court held that inducing infringement liability under §271(b) "requires knowledge that the induced acts constitute patent infringement."³⁷⁷ In other words, the second interpretation in the hypothetical above is correct—A must have intended to induce act(s) by B that infringe C's patent. This result followed from the Court's earlier conclusion in Aro Mfg. Co. v. Convertible Top Replacement Co.,³⁷⁸ that a contributory infringer under 35 U.S.C. §271(c) must have "knowledge of the existence of the patent that is infringed."³⁷⁹ Because §271(b) and §271(c) share a common origin in pre-1952 Act jurisprudence,³⁸⁰ and both statutory provisions invoke the same interpretive question,³⁸¹ the Global-Tech Court concluded that the intent requirement for the two statutory provisions should be read in tandem.³⁸²

[C] Historical Background

The doctrine of contributory patent infringement, statutorily codified at 35 U.S.C. §271(c) in the 1952 Patent Act, has its origins in nineteenth century judicial decisions such as Wallace v. Holmes.³⁸³ Under a theory of joint tortfeasance, the Wallace court held liable for infringement the defendant supplier of an unpatented burner for an oil lamp. When consumers combined the burner with a chimney, they directly infringed the plaintiff's patent on the combination lamp device comprising burner and chimney.³⁸⁴ The burner was intended for use in the claimed combination invention. Thus, the defendant burner supplier was contributorily liable for the direct infringement by its customers.³⁸⁵

The Federal Circuit has explained that

[t]he doctrine of contributory infringement long predated the enactment of [35 U.S.C.] §271(c). See, e.g., Wallace v. Holmes, 29 F.Cas. 74, 80 (No. 17,100) (C.C.D. Conn. 1871) (holding that the sale of an unpatented burner component intended for use in a patented lamp combination contributorily infringed); see also Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 377 U.S. 476, 485–88 & n. 6, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1963). Enacted as part of the Patent Act of

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